Patent Reform Exposed, Part I – Raising the Inventive Step

This is the first in a series of articles discussing the various reforms proposed in IP Australia’s Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.  We previously reported (here) on the public release of the Exposure Draft.  IP Australia has invited the submission of comments, which are due by 4 April 2011.

In this article, we look at the proposed changes to the requirements for establishing the presence or absence of an inventive step (otherwise known as ‘obviousness’).

WHAT IS THE EXISTING PROBLEM?

The standard for assessing inventive step in Australia is widely regarded as being lower than the corresponding standard under the patent laws of many of the country’s major trading partners.

There are two main reasons for this, both of which may be regarded as aspects of a peculiar ‘parochialism’ in the Australian law.  Generally speaking, an invention will involve an inventive step so long as a person skilled in the relevant art would not, at the priority date, have considered it obvious in light of the common general knowledge in the field, together with pertinent publicly-available information.  So far, so similar to the law in most jurisdictions.

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Tags: Australia, Law reform, Obviousness, Patent law, Raising the Bar

Senate Submissions Overwhelmingly Oppose ‘Gene Patent’ Ban

Senate secretary sorts submissions...

As we have previously reported, the Australian Senate Legal and Constitutional Committee is currently conducting an inquiry in relation to the Patent Amendment (Human Genes and Biological Materials) Bill 2010, which seeks to outlaw the patenting of human genes, and other biological materials that are ‘substantially identical to such materials as they exist in nature’.

The deadline for submissions to the inquiry was Friday, 25 February 2011.  The Committee is due to report by 16 June 2011.

Copies of the submissions received by the Senate Committee have now been published on the web.  To date, 100 submissions have been published – although the deadline has passed, it remains possible that there are more to come. 

We do not claim to have read all 100 submissions in detail.  However, we have looked over them and concluded that if the fate of the Bill were to be decided by a poll of those who have made submissions, it would be soundly defeated!  Of the 100 submissions, we consider that 67 are clearly opposed to the Bill, with only 23 substantially in support of the Bill.  The remaining 10 submissions are mostly supportive of the stated intent of the Bill, i.e. to outlaw the patenting of isolated human genes, but opposed to the actual amendments proposed by the Bill.

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Tags: Australia, Genetic technology, Patentable subject matter

Could the US Really Move to 'First-to-File'?

As many readers will be aware, a Bill to reform the US patent system is currently being considered in the United States Senate.  Recently renamed the 'America Invents Act', the proposed amendments to the US Patent Code most controversially include a change from the current system of 'first-to-invent' to a 'first-to-file' (or, more correctly, 'first-inventor-to-file') system, which is the basis for patent entitlement throughout most of the rest of the world.

The first-to-file amendments include a change to the novelty provisions in section 102 of the US Patent Code that would alter the existing 'grace period' from a potential exclusion of all prior art arising within the 12-month period preceding filing, to an exclusion of only that prior art arising directly or indirectly from the inventor's own disclosures.  This would effectively result in a grace period having similar effect to that which currently exists in a number of 'first-to-file' countries, including Australia.

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Tags: Law reform, News, Patent law, US

IP Australia's Exposure Draft Exposed!

Last month, we reported on the non-exposure of IP Australia's 'exposure draft' of proposed patent reform legislation, and expressed our concerns about the apparent secrecy surrounding a matter of such broad public interest as the workings of Australia's patent system.

We are therefore very pleased to report that the exposure draft of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, along with the draft Explanatory Memorandum, is now available to the public.

IP Australia is inviting submissions, which are due by 4 April 2011.  For those to whom the exposure draft has been exposed since December, this has been a relatively generous time period.  For everyone else, one month is a challenging timeframe for the digestion of the 102 page draft Bill, and 118 page Draft Explanatory Memorandum, and preparation and filing of any submissions. 

We note that IP Australia has preempted the possible submission of comments relating specifically to the vexed issue of gene patents.  We would likewise encourage anybody considering a submission to focus on issues specifically raised by this Bill.  There have been ample opportunities already for submission to inquiries directed to the gene patents issue, which is currently being addressed by the Senate Legal and Constitutional Affairs Legislation Committee.

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Tags: Australia, Law reform, News, Patent law, Raising the Bar

Is IP Australia the Envy of the Patent World?



USPTO Director David Kappos
turns green with envy at IP
Australia's successful reduction
of the examination backlog!



How many Patent Offices in the world’s major economies can say that since 2009 they have reduced the time spent by an application waiting for examination by 30%?

We do not know for sure, but we suspect that it may be only one – the Australian Patent Office.

(For those that doubt the claim that Australia qualifies as a ‘major economy’, we note that as at the time of writing the most recent rankings, by GDP, produced by the International Monetary Fund, the World Bank, and the CIA World Factbook, all place Australia at number 13, ahead of Mexico and South Korea, and not very far behind Spain, India, Russia and Canada.)

In any event, IP Australia proudly announced last week – in a news item modestly titled ‘Patents examination time slashed!’ – that:

The impact of a number of strategies has helped IP Australia to significantly reduce the average examination time for patents from an average of 16 months in 2009 to 11 months.

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Tags: Australia, Backlog, Examination, News, Patent Office